When is the descriptive use of a mark not in accordance with honest practices?


Jens K├╝nzel

Marula is a medium-sized tree common in the woodlands of South Africa, the fruit of which is used for a well-known liquor.

The liquor is distributed worldwide. In the last 20 years in Germany, it has been sold under the trademark ‘Amarula’. There are registered trademarks for Amarula, covering both the word and different word/picture combinations.

In 2008, another company started to sell a liquor called Marulablu. The bottles in which this liquor is sold show different claims such as ‘Marula taste’ or ‘Marula fruit distillate’. The manufacturer of the original Amarula liquor challenged the fact that the Marulablu liquor was in fact made of the marula fruits.

The manufacturer of the Amarula liquor saw Marulablu as an infringement of several of its own trademarks, and furthermore asserted that the Marulablu bottle design could be attacked under unfair competition rules of passing off.

Descriptive use, passing off, Amarula, Marulablu, honest practices